John Welch’s TTAB Blog — which monitors developments at the Trademark Trials and Appeals Board — picks up this recommended reading from a recent article in the Trademark Reporter journal on the topic of trade dress rights in musical instruments. John quotes authors Robert M. Kunstadt and Ilaria Maggioni commenting on the recent decision in Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 70 UPSQ2d 1911 (M.D. Tenn. 2004), which ruled in essence that under trade dress law, only a Gibson guitar can make a Gibson-looking guitar, to wit:

[H]ad the court properly appreciated how to play a LES PAUL guitar, the court would not have granted summary judgment for Gibson. At a minimum, the functionality of the alleged Gibson trade dress features presents fact issues for trial.

In other words, a Gibson looks like a Gibson because it sounds like a Gibson — and in trademark law, functional features are not granted trademark protection. (If they’re novel, you may be able to get a patent, of course.)

I don’t know as much about guitars as these authors, I guess, but back in the day when I used to play bass guitar on my Gibson SG — copy! — (see leftl yep, that’s your blogger) I sure knew that it wasn’t playing like the real thing. But it did look enough like a Gibson and, what I found most valuable, had a guitar-proportioned fret board unlike the long Fender basses that were most popular but which I found harder to play. So on the one hand I, as the consumer, was driven by functionality. On the other hand, I wanted a bass that looked like a real big-boy bass. Considering the fairly low quality of my instrument, it’s hard to imagine that the product configuration had much if anything to do with how it sounded. At the end of the day, and on a quick read of the excerpts, I might agree with the TTAB here.

UPDATE: On the other hand, the issue isn’t how my Acme guitar’s sound was affected by its shape, it’s how the Gibson was — that’s what drives the functionality argument. So perhaps I should reconsider after I read the whole opinion and the article.

“The bars are purely functional representations of the strength of cell service and a standardized one at that,” he writes. “If anything were unworthy of being captured as a trademark, this should have been it.

Ok, well, maybe not anything, but the point is well taken. More from O’Connor:

Fortunately, the PTO seems to have come to its senses and is going to cancel the mark. But in the meantime, at&t continues to paste billboard all over the country with the “More bars in more places” campaign and the bars logo with “®” attached. I understand that until the mark is fully cancelled, they probably have a right to keep using the “®”. But I think it is shady and misleading at best, given the cancellation proceedings underway.

Well, you ain’t canceled till you’re canceled, but read his post, because he does a great job of addressing how corporations use dubious claims of IP rights as very sharp elbows to crowd out others for market position. “You have to admire that kind of Machiavellian cunning,” he says. “And it’s a testimony of the continuing power of high cost lawyers and blanket marketing campaigns.”

Well, all right, but it’s testimony to a damned good cell signal too, Professor!

After all, take it from a T-Mobile customer — you don’t see T-Mobile trying to “own” the icon for robust cell coverage. They were reduced to trying to corner the market for magenta.

Staci Riordan reports on the big shoe-vs.-shoe design lawsuit everyone’s talking about — invoking copyright plus one Lanham Act and two New York law varieties of “unfair competition” that seems to fold in a trade dress claim (huh?) — between a couple of shoe designer guys, such as they are.

Regarding manly, Republican, footwear, I do know; but from ladies’ shoes I don’t. I can’t even pronounce the name of the plaintiff. So I leave the legal analysis to her and, with all due respect, the fashion analysis to … of course … The Manolo.

Two shoes too many

What struck me, though, was that the fight is over what seem to be called “Lego shoes.” I spent half an hour on the Internet trying to figure out if that name is “authorized” or just a nickname, based on the designer’s — oh, ok, Balenciaga‘s — homage to, uh, Lego.

Balenciaga’s unnavigable brochureware website is certainly not helpful. Ultimately I came up empty, concluding that in fact Balenciaga is not a LEGO licensee and does not use the brand itself in connection with commerce in the shoes.

This seems to be confirmed, and yet treated in an odd way, by the complaint itself, in which Balenciaga (I think I got it down now) alleges as follows:

11. In February 2007 Plaintiff Balenciaga showcased its distinctive Closed FrontCage Sandals with Ankle Pads during its Fall 2007/Winter 2008 runway collection. These shoes are also known by their more fanciful names the “Sportiletto” and/or the “LEGO Shoes”. (Balenciaga’s LEGO shoes are depicted in Exhibit A).

13. The Balenciaga LEGO shoes were designed for Plaintiff Balenciaga by Nicolas Ghesquiere, a French citizen.

14. Balenciaga began selling its distinctive LEGO Shoes in the United States in the fall of 2007.

15. Balenciaga’s LEGO shoes garnered much press coverage in the United States, and were featured in various U.S. fashion magazines, including Vogue and ELLE.

Well, yeah. But here’s the thing. Right: There is no claim in the complaint that Balenciaga is a licensee. True, the word “LEGO” is in all caps per the style in trademark practice (hence the all-caps name of this blog) — a tacit acknowledgment that we’re talking about, well, someone’s trademark here. But there’s no mention at all of whose trademark that just might be.

So I do think it’s a little strange, and a little discomfiting from an IP point of view, that Balenciaga’s papers adopt the popular, but evidently unauthorized, “LEGO shoes” name for their offering. They define the subject of their lawsuit in the complaint as “Balenciaga’s LEGO shoes,” “distinctive LEGO shoes,” etc. All this would certainly give anyone reading the papers, at least, the distinct impression that there’s a trademark in this case for “LEGO shoes.” And they could be forgiven for thinking that the owner of that trademark is… Balenciaga!

All right, this is probably not a use in commerce under the Lanham Act. I’m not saying Balenciaga is, exactly, infringing or even diluting the LEGO trademark, or that its lawyers are. Besides, this use, in pleadings, is almost certainly privileged.

So, forget which shoe looks like which! Given Lego’s propensity for claiming rights in stuff, isn’t it surprising that those blockheads haven’t weighed in with their usual snappy routine? Why isn’t Lego dropping the hammer on third parties that market the shoes using the LEGO trademark (or using just plain Legos!)? How come Lego isn’t screaming about how this dilutive use is being reinforced by Balenciaga’s fast-and-loose “acquisition” of the LEGO mark in its papers, amplified by the widespread reporting of the lawsuit?

Shouldn’t LEGO, hardly ever shy about trademark rights both real and imagined, be claiming some kind of rights in, or about, the “LEGO shoes”?

One of the first posts on LIKELIHOOD OF CONFUSION® was about Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 70 UPSQ2d 1911 (M.D. Tenn. 2004), and the question of whether “only a Gibson guitar can make a Gibson-looking guitar.” Not long after that decision came down, Gibson’s rival Fender filed for what it now evidently believed it had a shot at getting — a trademark registration for guitar shapes.

Fender had an uphill battle, though. Not only would it have to satisfy the post-TrafFix Devicesstandard for protection of a product configuration as a trademark, namely showing that the feature claimed as a trademark is not functional. In addition, because in the case of a musical instrument the product is the packaging, Fender would have to prove “acquired distinctiveness” for its would-be trademark-protected products, such that “the primary significance of the product configuration in the minds of consumers is not the product but the source of that product.” (Remember that.)
Obviously, however, Fender was emboldened by the Gibson decision. Never mind that in September, 2005, the Sixth Circuit reversed the Middle District of Tennessee ruling in Gibson, in an opinion which rejected a unique theory of LIKELIHOOD OF CONFUSION. It was a variation of downstream or post-sale likelihood of confusion divided by “initial-interest confusion,” a combination the court termed “smoky-bar confusion”:

Smokin' Guitar

Finally, Gibson argues that, taken together, the initial-interest-confusion and post-sale confusion doctrines should be extended to include something that we can only describe as a “smoky-bar theory of confusion.” Initial-interest-confusion doctrine, which we have already rejected on the facts of this case, applies when allegedly improper use of a trademark attracts potential purchasers to consider products or services provided by the infringer. Post-sale-confusion doctrine, which we have also rejected on the facts of this case, applies when allegedly improper use of protected trade dress on a lower-quality product diminishes the reputation of the holder of the rights to that trade dress. In the smoky-bar context, however, Gibson does not suggest that consumer confusion as to the manufacturer of a PRS guitar would lead a potential purchaser to consider purchasing a PRS, rather than a Gibson, or that Gibson’s reputation is harmed by poor-quality PRS guitars. Rather, Gibson argues that this confusion occurs when potential purchasers see a musician playing a PRS guitar and believe it to be a Gibson guitar:

Smokey B'ar

In the context of guitar sales, initial interest confusion is of real consequence. Guitar manufacturers know that they can make sales by placing their guitars in the hands of famous musicians. On a distant stage, a smoky bar, wannabe musicians see their heroes playing a guitar they then want.

As Gibson concedes that PRS produces high-quality guitars, we do not believe such an occurrence could result in confusion harmful to Gibson. If a budding musician sees an individual he or she admires playing a PRS guitar, but believes it to be a Gibson guitar, the logical result would be that the budding musician would go out and purchase a Gibson guitar. Gibson is helped, rather than harmed, by any such confusion.

Fender, nonetheless, forged ahead. This did not go unnoticed: a phalanx of guitar manufactures promptly opposed the application. And now, according to the blog of Musical Instrument Professional magazine, MIPro:

MMR Magazine has reported that FMIC’s US trademark applications concerning its Stratocaster, Telecaster and Precision guitar body shapes have been rejected. Similar applications have previously been rejected, both in the UK and the rest of Europe. Read More…

Come on, John, this is the Daubert world we’re living in. Ask Mrs. TTABlog. She can tell you the difference with her eyes closed!

The question of whether consumers are likely to be confused is the signal inquiry that determines if a trademark infringement claim is valid. This blog is about trademark law, copyright law, free speech (mostly as it relates to the Internet) and legal issues related to blogging.

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